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Bio ventures presentation introduction

This seminar will cover intellectual property basics, the UAMS process for protecting intellectual property and the commercialization process. Participants should have a better understanding of intellectual property matters and the role of BioVentures in managing and commercializing property.

Copyright Protection Under the 1976 Copyright Act, a copyright exists “in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.” Moral Rights in a work of visual art The right to claim authorship in the work. The right to prevent use of his/her name as the author of works he/she did not create. The right to prevent the use of his/her name as the author of her own work if the work has been distorted, mutilated, or modified so that the use would be prejudicial to his/her reputation. The right to prevent grossly negligent or intentional destruction of his/her work if it is of recognized stature.

Definition Trademark status protects symbols and commonly associated logos from being used by other individuals or companies. Trademark protection helps prevent others from making an inferior product and using a well established or respected logo to sell it. For example: Rolex is a well respected and known “mark” to represent quality watches. If you purchased a watch from a vendor with the name “Rolex” that was not made by the Rolex corporation and you were unaware that the watch you owned was a “knock off”; what would happen to your opinion of the Rolex company if your watch was a poor quality product and did not live up to your expectations of a “Rolex watch”? Trademark protection helps to create buyer confidence and loyalty in the products they are purchasing. Common Trademarks include: The Coca-Cola Cursive Script Logo, the McDonalds Golden Arches, the Nike logo, The Apple Company Logo, & the NBC Peacock Types of trademarks: Service marks: marks that identify and distinguish services instead of products. Certification marks: words, names, symbols, or devices used by one person to certify the goods or services of others that have certain characteristics. The Good Housekeeping Seal of Approval is an example of a certification mark. Collective marks: Collective membership marks: marks adopted for the purpose of indicating membership in an organization. Collective trademarks or service marks: marks adopted by a collective organization for use by its members in selling individual goods or services. Indications of origin (other than marks): trade names (ex. The names of businesses) are protectable as unregistered indications of origin.

How to determine if information is a trade secret: Is the information actually a secret? How widely is the information known outside of the secret holder’s business? Who within the company knows the information? Did the secret holder take reasonable measures to ensure that the secret remains a secret? How difficult would it be for other people to acquire or duplicate the information in the secret? Does the secret give the holder a commercial, competitive advantage over others who do not know it? How much effort or money did the holder expend in acquiring or developing the secret? How do you protect a trade secret? Never publish a secret Never disclose the secret without explicit approval

Government licenses Non-exclusive Nontransferable Irrevocable Paid-up March-in Rights The government can require the grantee/contractor to grant a license on reasonable terms to a responsible applicant However, this practice has not been used

3.
A man-made creation that has
commercial value and can be protected
by law. Intellectual Property law
protects inventions and creative
expressions
Examples of Intellectual Property
include: art, music, medical devices,
company logos, medicine, and methods
of manufacturing

4.
UAMS researchers regularly deal with issues of Intellectual Property,
ours or others
Many of the innovations, inventions, and improvements developed in
our facilities can be protected under Intellectual Property law
As a UAMS employee or student, you may be directly involved with
generating Intellectual Property
All employees and some students are required to assign such Intellectual
Property to UAMS if:
UAMS pays you a salary/stipend or your research is supported by UAMS
The Intellectual Property relates to your role at UAMS

6.
Protects sound recordings, paintings, visual expressions of an idea,
written works, forms and software
Copyright protection gives the owner the right to:
Reproduce the work
Prepare derivative works
Distribute or sell copies of the work
Publicly perform or display the work
Perform the work by means of audio
transmission
Moral rights in the work (if the work is a visual
art)

7.
Trademark protection covers a word, name, symbol, or
device, which is used to distinguish the goods of one
person from goods of others
Trademark protection is also used to identify the
source of goods
Trademarks are categorized as:
Service marks, certification marks, collective marks, and
indications of origin

8.
Information that has actual or
potential economic value
because it is not known or
readily ascertainable by others
The person/organization in
possession of the secret must
use reasonable efforts to keep it
a secret
There is no registration process
for a trade secret so a secret
must always be closely guarded
in order to have protection

9.
A patent is the legal protection of an invention. A patent is not
automatically granted when the invention is created. An inventor must
apply for patent protection
Patent protection extends to any new and useful process, machine,
manufacture, or composition of matter, or any new and useful
improvement
Patent protection essentially covers “anything under the sun that is made
by man”

10.
Provides the legal framework for transferring university generated,
federally funded inventions into the marketplace
In return for federal funding, UAMS is required to provide the
following:
A written agreement to disclose inventions and assign them to UAMS from
all employees
UAMS is obligated to disclose each new invention made with federal
funding to the government
UAMS must make reasonable efforts to commercialize the invention
UAMS must provide mandatory compensation to the inventor(s)
As an employee of UAMS, you are required to disclose all
innovations and inventions

11.
Research that is funded either
partially or fully by the Government
The inventor is required to disclose
government sponsorship in the patent
application
Government receives a license to
practice the invention
Government has march-in rights
Failure to disclose the invention to the
government can result in the
government taking the patent rights

12.
Bayh-Dole act (1980) allowed institutions
to patent discoveries made with federal $--
but caveats attached to licensing those
patents:
Preference for US companies; small business over large
No assignment of rights (license instead)
Grant non-exclusive rights to US Gov’t
US manufacturing requirements (flexible)
Distribution of $ to inventors
Actively promote commercialization of inventions
(diligence, non-exclusivity)

15.
Spin off companies
Resource for company formation with SBIR or STTR funding
Assistance with business plan drafting
Introduction to management resources to run the business
Networks to assist with financing and growth of the business